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In Converse Inc. v. Ramesh Ramchandani et al., Converse had elected to request an award of statutory damages after an interlocutory judgment had found Mr. Ramchandani liable for infringing Converse’s high-cut Chuck Taylor All Star canvas shoes. Accordingly, the High Court of Singapore was given the unfamiliar task of assessing the amount of statutory damages to be awarded under Section 31(5) and (6) of the Trade Marks Act.

In 2004, the Trade Marks Act was amended to include statutory damages as an alternative measure for situations where it was difficult to prove actual losses or obtain an account of profits. This addressed the frustrating situation where a plaintiff would be deprived of adequate compensation because of an infringer’s refusal or failure to cooperate.

The introduction of Section 31(5) to the Trade Marks Act gives the court broad discretion to award the appropriate amount of damages, with a prescribed maximum amount of SGD 100,000 for each type of infringing good or service. Section 31(6) lays out the factors that the courts must consider when determining the amount of damages to be awarded. The flagrancy of the infringement, the loss suffered by the plaintiff, the benefit accrued by the defendant and the need to deter other similar instances of infringement are factors for the courts to consider.

Applying these factors to the factual matrix of this case, the court first considered the loss suffered by the plaintiff in combination with the benefits accrued by the defendants. Both tangible and intangible factors were taken into account, including loss of reputation of the plaintiff’s brand and loss of potential profits. Second, the flagrancy of the offense was considered. This involved an examination by the court of the conduct of defendant Ramchandani and the role he played in enabling the infringing activities. Last, the court considered the need to deter infringement. Interestingly, the court decided that well-known brands were more deserving of protection, because, after the plaintiff had spent millions of dollars in promotional activities, it was tempting and easy for counterfeiters to ride on the plaintiff’s efforts and deprive the plaintiff of the fruits of its labor.

In conclusion, the court decided that an award for the maximum amount of SGD 100,000 would be appropriate as compensation to Converse. (Converse Inc. v. Ramesh Ramchandani et al., [2014] SGHCR 11 (May 23, 2014).)

This precedent opens up an alternative and cost-effective measure that brand owners may consider in situations where it is difficult to account for lost profits.


This article first appeared in the INTA Bulletin. For further information please visit http://www.inta.org/INTABulletin/Pages/INTABulletin.aspx.

 

 

 

 

 

 

 

 

 

 

 

 

This article first appeared in the INTA Bulletin.  For further information please visit http://www.inta.org/INTABulletin/Pages/INTABulletin.aspx .

The decision by the Intellectual Property Office of Singapore (IPOS) in Carolina Herrera, Ltd v. Lacoste ([2014] SGIPOS 3 (Feb. 20, 2014)) shows that the Registry may not be exceedingly enthusiastic about allowing a trademark proprietor to claim exclusive rights over a common element in a family or series of marks by virtue of the trademark registration of these family marks, where the registration of the common element has not been applied for independently.

Lacoste applied for the registration of the mark L.12.12 (see below) for goods in Classes 3, 8 and 25. (Application No. T1100417A, filed Dec. 2, 2010.) Carolina Herrera, Ltd opposed the mark based on its prior-registered series of trademarks, all of which contained the element 212 together with a word element.

The opponent argued that, although it had not applied for the registration of the mark 212 simpliciter, it had the exclusive claim over the common element of the subject mark, that is, 212, by virtue of its earlier trademarks (namely, 212 ON ICE, 212 VIP, 212 SEXY and 212 BY CAROLINA HERRERA). It argued further that the element 212 formed the distinctive and dominant element of its earlier marks, which therefore constituted a series or a family of marks, all containing the element 212; consequently, the public recognized the entire family of marks as belonging to the opponent, and registration of the applicant’s mark would lead to confusion as to the trade origin in the marketplace.

The applicant contended that since the opponent did not register the mark 212 simpliciter, it should not be granted a monopoly over the use of the mark. It argued, further, that the opponent’s marks were never referred to as 212 independently but were always denoted by an additional element (i.e., one of the word elements SEXY, VIP, ON ICE and BY CAROLINE HERRERA). This demonstrated that although 212 formed an element of the opponent’s mark, the public did not recognize 212 simpliciter as belonging to a family or series of marks.

The Registrar of Trade Marks, on a careful assessment of the evidence adduced by both parties and the relevant jurisprudence, held that the opponent did not have the exclusive right over the element 212. She opined that the registration of the marks containing a common element did not ipso facto give rise to a presumption that the public perceived the marks as belonging to a family. In order to claim monopoly over a common feature, the opponent had to advance sufficient evidence that consumers perceived and remembered the marks as belonging to a family of marks, containing common characteristics and associated with each other in terms of source of trade.

In conclusion, the Registrar also held that there was no visual, aural or conceptual similarity between the mark applied for and the opponent’s marks and that the element 212 simpliciter would not be considered an “earlier trademark” under the Trade Marks Act.

 

This article first appeared in the INTA Bulletin.  For further information please visit http://www.inta.org/INTABulletin/Pages/INTABulletin.aspx .

In the early part of 2014, the Intellectual Property Office of the Philippines (IPOPHL) issued Memorandum Circular Nos. 14-002 and 14-003 amending the reckoning date of the annual fee due dates for divisional applications (filed via direct route or PCT) to achieve a uniform procedure in the payment of annual fees for patent applications. The amendments synchronize the annual fee due dates of both the parent application and its divisional application effective 3 March 2015, one year after the issuance date of Circular 14-002.

Under the current practice, the reckoning date for the annual fee of divisional patent applications is the publication date of the divisional application in the IPOPHL e-Gazette regardless of whether the divisional application is derived from a direct route patent application or from an international patent application. Starting 3 March 2015, however, annual fees for divisional applications shall be reckoned from the publication date of the parent application. Hence, for divisional applications derived from an international patent application, the annual fee due date shall be based on the international publication date of the parent application while for direct route divisional applications, the annual fee due date shall be reckoned from the publication date of the parent application in the IPOPHL e-Gazette. If the divisional application was filed more than four (4) years after the publication date of the parent application, payment of annual fees for the divisional application shall commence on the following year from the last year paid in the parent application, and on each subsequent anniversary of such date. The tables below illustrate these changes.

 

                                                            Direct Route Patent Application

Particulars

Parent Patent Application

Divisional Patent Application

Philippines Filing Date

5 January 2010

12 January   2014

Publication Date in the IPOPHL e-Gazette

10 December   2012

Not yet published

ANNUAL FEES

1st

10 December   2016

1st

10 December   2016

2nd

10 December   2017

2nd

10 December   2017

3rd

10 December   2018

3rd

10 December   2018

4th

10 December   2019

4th

10 December   2019

5th

10 December   2020

5th

10 December   2020

6th

10 December   2021

6th

10 December   2021

7th

10 December   2022

7th

10 December   2022

8th

10 December   2023

8th

10 December   2023

9th

10 December   2024

9th

10 December   2024

10th

10 December   2025

10th

10 December   2025

11th

10 December   2026

11th

10 December   2026

12th

10 December   2027

12th

10 December   2027

13th

10 December   2028

13th

10 December   2028

14th

10 December   2029

14th

10 December   2029

 



                                                

                                                                 PCT National Phase Application

Particulars

Parent Patent Application

Divisional Patent Application

International Filing Date

10 August   2010

-

National Phase Entry Date

5 January 2012

20 November   2013

International Publication Date

10 February 2011

-

Publication Date in the

IPOPHL e-Gazette

-

20 April 2014

ANNUAL FEES

1st

10 February 2015

No annual fee due yet

2nd

10 February 2016

1st

10 February   2016

3rd

10 February   2017

2nd

10 February   2017

4th

10 February   2018

3rd

10 February   2018

5th

10 February   2019

4th

10 February   2019

6th

10 February   2020

5th

10 February   2020

7th

10 February   2021

6th

10 February   2021

8th

10 February 2022

7th

10 February   2022

9th

10 February   2023

8th

10 February   2023

10th

10 February   2024

9th

10 February   2024

11th

10 February   2025

10th

10 February   2025

12th

10 February   2026

11th

10 February   2026

13th

10 February   2027

12th

10 February   2027

14th

10 February   2028

13th

10 February   2028

15th

10 February   2029

14th

10 February   2029

16th

10 February   2030

15th

10 February   2030

Multi Access Limited (“Multi Access”) recently succeeded in their claim to cancel the trademark registrations of a local entrepreneur, Dhalim Soekodanu (“Dhalim”), on the ground of bad faith, pursuant to Trademark Law No. 15 of 2001, Article 4.

 multiaccess and dhalim mark

Multi Access is the owner of numerous trademark registrations for 王老吉which is pronounced as WONG LO KAT in Cantonese and WANG LAO JI in Mandarin. It is popularly used for herbal tea products. “Wang” or “Wong” is a Chinese surname which means “King,” “Old” and “Lucky.” The said mark is registered in ­­­­­­­­­­­­­­­Argentina, Australia, Benelux, Botswana, Brazil, Brunei, Canada, Cambodia, Chile, Costa Rica, Croatia, Cuba, Egypt, EU, Germany, Hongkong, Iceland, India, Indonesia, Iran, Iraq, Israel, Italy, Japan, Jordan, Kenya, Kuwait, Laos, Lebanon, Macau, Malaysia, Mexico, Monaco, Morocco, Myanmar, Namibia, New Zealand, Nigeria, Norway, Oman, Pakistan, Panama, Peru, Philippines, Portugal, Korea, Russia, Saudi Arabia, Singapore, South Africa, Spain, Sri Lanka, Sudan, Switzerland, Swiss, Taiwan, Thailand, Turkey, United Arab Emirates, Uganda, America, Britain, Venezuela, Vietnam and Yemen. In Indonesia, it was registered in class 32 as early as 1991.

Dhalim Soekodanu, a local Indonesian entreprenuer, also registered the mark Wang Lao Ji in a different style        

     dhalimin classes 5 and 32 in 2002.

 

In the course of the proceedings, Multi Access argued that the subject registration is similar in appearance, spelling and/or the sound. Further, Multi Access established the well-known status of the Wong Lao Ji trademark by demonstrating the extensive trademark registrations and marketing campaigns conducted in the promotion of the Wong Lao Ji products in many countries, including Indonesia. Evidence submitted by Multi Access included copies of certificates of foreign registrations/applications, advertisement, rewards and favourable trademark cancellation decisions in favour of Multi Access.

In ruling in favor of Multi Access, the Judges of the Central Jakarta Commercial Court declared Wong Lao Ji to be a well-known mark and found Dhalim to have acted in bad faith in hijacking the said mark.

The foregoing decision underscores the policy under Article 6 of the Trademark Law which states that an application shall be rejected if the mark is similar in its essential part or entirety with a well-known mark owned by another party for the same kind of goods or services. Thus, a trademark registration obtained in bad faith will rarely be upheld by the Courts.

Design laws vary by country. Some countries classify designs as patents and some have separate "registered design" or “industrial design” systems. In some countries, designs of products must be whole products in order to be registrable and not parts of products. Some countries allow protection of only part or parts of the product but the said part or parts of the product must be clearly identified in solid lines in the representations while the parts for which protection is not claimed must be indicated by means of dotted or broken lines.

 

A comparison of primary features of design laws in the ASEAN countries is summarized in the table and discussed below.

Country

Term

Novelty

Multiple embodiments

Allowed in one application?

Color

Allowed?

Dashed lines/shading allowed

Indonesia

10 years

Absolute

Yes, but Indonesia has strict “unity of design” requirement. Can file divisional later.

Yes

Dashed lines Yes

Shadings - No

Malaysia

Up to 25 years in 5 year increments

Absolute

Yes, provided all are in the same Locarno class

Yes

Yes

Philippines

Up to 15 years in 5 year increments

Absolute

Yes

Yes

Yes

Singapore

Up to 15 years in 5 year increments

Absolute

No

Yes

Yes

Thailand

10 years

Not published in any country, not known or used in TH

No

Yes

No

Vietnam

Up to 15 years in 5 year increments

Absolute

Yes, but variants must be fully described in disclosure

Yes

No

 

Indonesia

In Indonesia, it is possible to register “creations of forms, configuration or compositions of lines or colors, or lines and colors, or the combination thereof in three dimensional or two dimensional form which give an aesthetical impression.”

Although Indonesia allows multiple embodiments in one application, the embodiments must satisfy the “unity of design” requirement. Should the Examiner find that there is no “unity of design,” the embodiments can be split into separate applications later in the examination stage.

Malaysia
Coverage is allowed under the Design Act for “features of shape, configuration, pattern or ornament applied to an article by any industrial process or means, being features which, in the finished article, appeal to and are judged by the eye.”

While “novelty” is a requirement, no substantive novelty examination is performed prior to registration. A statement of novelty pointing out the portion claimed as novel is required.

Philippines

In the Philippines, an industrial design is defined as “any new or original creation relating to the ornamental features of shape configuration, form or combination thereof, of an article of manufacture, whether or not associated with lines, patterns or colors, which impact an aesthetic and pleasing appearance to the article.”

Philippine design practice allows for the use of multiple embodiments. However, it is important that the articles should be of substantially similar dominant design features that are embodied in a single design concept and relate to the same sub-class of the International classification or same set or composition of articles.

Singapore

Industrial designs or models in Singapore are defined as “the features of shape, configuration, pattern or ornament applied to an article by any industrial process.”
 
For national registration, Singapore requires designs be novel, but no examination as to novelty is conducted at the time of application. A statement of novelty is required and should be less than 500 words.

Thailand

In Thailand, protection can be obtained for “any configuration of a product or composition of lines or colours that gives a special appearance to a product and can be used as a pattern for a manufactured or handcrafted article.”

It is important to note that Thailand does not allow multiple embodiments in one application and there is no provision for filing a divisional application in Thailand. Hence, to validly obtain protection for several embodiments, they must be filed separately in the filing stage.

Vietnam

Industrial design patents “protect the outer appearance of a product represented by lines, three-dimensional forms or colors or a combination of these … and which may serve as a pattern for the manufacture of an industrial or handicraft product.”

All design filings must include views of all sides of the article and a perspective view.

Conclusion

Since design laws and practice varies between countries, it is important that everyone considering industrial design protection must be aware of the different requirements and work with their agents in each country to obtain the most efficient and cost effective route to registration.

 

 

Patents were first used as collateral to secure financing by Thomas Edison in the late 1880s. Edison used his patent for the incandescent electric light bulb as collateral to secure financing to start his company, the General Electric Company. Since Edison’s use of his patents as collateral, intellectual property has been used as collateral in the United States. Although the use of intellectual property as collateral did not gain popularity in the late 1800s with Edison’s use, it has become quite popular in recent years.

A patent is a right granted to the owner of an invention that prevents others, without the owner’s permission, from making, using, importing or selling the invention. A patentable invention includes a product or a process that gives a new technical solution to a problem, or a new method of doing things, the composition of a new product, or a technical improvement on how certain objects work. A patent has a term of 20 years from the date of filing, subject to the payment of annual renewal fees. One main thing to think about when using patents as collateral is the fact that patent protection is territorial. If filed and granted in Singapore, a patent is only enforceable within Singapore and therefore, the protection is only afforded to a patent owner within Singapore.

On April 8, 2014, Singapore announced details of a new financing scheme aimed at helping local businesses secure bank loans by using their patents as collateral. The Intellectual Property Office of Singapore (IPOS) is the agency that implements this scheme and hopes that this will spark the interest of local companies.

Companies interested in availing themselves of the scheme must be local enterprises incorporated in Singapore and use a granted patent as collateral. As part of the approval process, their patent will be valued by a member of an IPOS-appointed panel, which includes valuation companies, i.e. American Appraisal Singapore, Consor Intellectual Asset Management and Deloitte & Touche Financial Advisory Services. The panel will determine the worth of the patent to help banks decide on how much to lend. Three local banks – DBS, OCBC and UOB – are currently participating in the scheme.

This two-year plan by IPOS will involve the Singapore government sharing the default risk with participating banks. The banks will start accepting loan applications under this scheme from late second quarter of this year until April 2016. Interest ranging from 3.5% to 7.5% will be charged for loans of between one and six years. This rate is lower than the interest charged to smaller companies seeking unsecured loans, which is 8% to 10%.

IPOS chief executive Tan Yih San, during the scheme’s launch, said: “What we are (doing) is to work with the banks to recognise intangible assets, which is not quite something that is readily available in the loan market today.” He added that the scheme will open opportunities for companies to grow and expand not just locally, but overseas as well.

During the same event, Indranee Rajah, Senior Minister of State (Law and Education), said: “There is a growing trend of businesses being valued based on intangible assets. According to a report by Brand Finance, 42% of enterprise value in Singapore was in intangible assets in 2012, up from 35% in 2011. With IPOS’ new IP Financing Scheme, businesses can monetize their IP assets,” she added.

There are several advantages of using intellectual property as collateral.

One advantage is that intellectual property can be more secure than other forms of collateral. Most investors only invest in intellectual property that is receiving licensing royalties. The royalty payments are the ultimate source of cash that repay the loan. Hence, there is a consistent source of cash flow to repay the loan through licensing and, therefore, lower the risk of default. Another advantage is the increased return the owner of the intellectual property earns. Using intellectual property as collateral increases the owner’s return through increased leveraging. Many royalty streams are collected in one lump sum rather than over time, and this lump sum can then be invested in future or current projects that have a higher return than the cost of financing.

On the other hand, risk is the main disadvantage in using intellectual property as collateral. However, this can be minimized through proper loan structure.

As Singapore is increasingly becoming a technology-driven, knowledge-based economy, the use of intellectual property as collateral will become popular moving forward


In 2009, Fun Ranch Mega Development, Inc. (Fun Ranch) filed several trademark applications for a Facade of a Building for use on children’s entertainment and amusement center. The applications were rejected by the Examiner on the ground that the mark may not be registered because it does not function as a trademark and is not capable of distinguishing the goods or services.

On Appeal to the Director of Trademarks, Fun Ranch claimed that its mark is a unique design of a facade of a building that functions as a service mark. It argued that the mark is a visible sign that is distinctive of its business as proven by the fact that no other design similar to it belonging to a different recreational or amusement establishment was cited by the Examiner.

The Director of Trademarks denied the appeal, hence the case was elevated to the Director General of the Intellectual Property Office of the Philippines (IPOPHIL).

In its decision handed down in November 2013, the Director General stated that the function of a trademark is to point out distinctly the origin or ownership of the goods to which it is affixed; to secure to him, who has been instrumental in bringing into the market a superior article of merchandise, the fruit of his industry and skill; to assure the public that they are procuring the genuine article; to prevent fraud and imposition; and to protect the manufacturer against substitution and sale of an inferior and different article as his product. Significantly, a mark to be registered must be a visible sign capable of distinguishing the goods and services of an enterprise.

An examination of the subject applications shows the lack of a distinguishing feature that would make it a distinct "facade of a building" used by an enterprise for children’s entertainment and amusement center. This representation of a facade of a building does not function as an indicator of Fun Ranch’s business enterprise. In sum, Fun Ranch’s use of a unique facade of a building does not qualify for trademark registration.

This case demonstrates the importance of a trademark being a source identifier. Failure of a mark to function as such will result in disqualification for trademark registration.

The Government of India, Ministry of Commerce and Industry (Department of Industrial Policy and Promotion) has published the Patent (Amendment) Rules, 2014 on 28 February 2014. The amendments are effective from the date of publication.

The salient aspects of the amended rules include:

Applicant: Introduction of a third category of applicant for patent in the form of “small entity”.

The fees charged to small entity applicants have been fixed in between the fees for a natural person and a large entity. The applicants can now be categorized as follows:

(a)  Natural Person Applicant: Any natural person either alone or jointly with other natural persons.           
 
(b)  Small Entity Applicant: An enterprise (proprietorship, Hindu undivided family, association of persons, co-operative society, partnership firm, company or undertaking) engaged in “manufacture or production of goods” or “providing or rendering of services”, with the following limitation of investment:
 
(i)     Enterprise engaged in “manufacture or production of goods” with an investment in plant and machinery not exceeding ten (10) crore rupees. (Approx. US$ 1,611,085)
(ii)   Enterprise engaged in “providing or rendering of services” with an investment in equipment not exceeding five (5) crore rupees. (Approx. US$ 805,545)
 
In case of Small Entity applicant status, the applicant needs to provide an evidence for the same. Such evidence has to be filed at least once with the particular application number.
 
(c)    Large Entity Applicant: An applicant other than a Natural Person or Small Entity.

Official Fee: Establishment of a revised fee structure for filing of patent application as well as other proceedings before the Patent Office.

The revised fee structure is as follows:

           Natural Person:           Approx. 60% increase from the previous fee for a natural person.

            Small Entity:               Equivalent to the previous fee for a large entity.

            Large Entity:               Approx. 100% increase from the previous fee.

Copy of the revised fee schedule can be downloaded here.

Furthermore, filing an application or document with the Patent Office in hard copy (i.e., not availing the e-filing facility/online mode) would incur an additional 10% official fee in the respective category.

Also, in case of partial or full transfer of an application from an applicant with Small Entity status to an applicant with Large Entity status, the difference, if any, in the scale of fee(s) between the fee for Small Entity and the fee for Large Entity, in the same matter, is to be paid by the new applicant along with the request for transfer.

Please contact us at このメールアドレスはスパムボットから保護されています。閲覧するにはJavaScriptを有効にする必要があります。 should you require any further information or clarification regarding the above.

 

 

 

火曜, 01 4月 2014 04:18

Enforcement Powers in Philippines

Pursuant to the recent amendments of the Philippines Intellectual Property Code (Republic Act No. 8293), the Intellectual Property Office of the Philippines (“IPOPHL”) issued Office Order No. 13-170 which provides the rules and regulations for the exercise of its enforcement functions and visitorial powers.

An Intellectual Property Rights Enforcement Office (“IPREC”) was established to receive information, complaints or reports from rights holders, other government agencies and the public in general relative to Intellectual Property Rights violations. The IPREC will be headed by the Director General and assisted by designated IPOPHL personnel.

IPOPHL enforcement actions are initiated by filing a verified complaint by the rights holder or its representative. Within 30 days from receipt, action must be taken to undertake any or all of the following enforcement actions:

(a) issuance of notice/warning to the respondents; (b) issuance of a visitorial order (“VO”) on the subject premises; (c) issuance of compliance order (“CO”) against the respondents; (d) immediate filing of administrative complaint before the local government unit concerns or other government agencies/tribunals; (e) referral of the case to the law enforcement agency for case build-up; (f) recommendation for application of search warrant; (g) dismissal of the complaint; (h) referral of the case to other government agencies for filing of charges for violation of other laws, rules or regulations; (i) such other actions necessary to ensure compliance with the provisions of the IP Code.

In the event a VO is issued, it shall be valid 10 days from issuance. The nature of the visit and the complained IPR violation must be duly explained to the owners, employees or representatives of the business establishment. Only those items prominently displayed in business establishments shall be noted in the Post-Operation report. The Director General may likewise issue a CO directing the owner of the business establishment to comply with the IP Code within 60 days to avoid the filing of an administrative action.

With fresh enforcement powers, IPOPHL is expected to provide the necessary assistance to trademark owners and support the fight against IPR violators in the Philippines.

 

 

 

火曜, 01 4月 2014 03:04

The Margins of Discretion in Singapore

The recent decision by the Intellectual Property Office of Singapore (IPOS) between V Hotel and Jelco Properties concerning an Application for Restoration of Trademark Application and Request for Extension of Time (EOT), shows that IPOS continues to take a stringent position with regard to procedural defaults such as an attorney’s delay in responding to IPOS within the deadline.
 
Facts
 
Trademark Application No. T1010045B for the mark (application mark) in the name of V Hotel (applicants) was published in the Trademarks Journal on July 1, 2011. An opposition was filed by Far East Hospitality Services (the opposition mark was later assigned to Jelco Properties, the respondents). The applicants were required to file their evidence within the extended deadline of October 2, 2013.
 
However, no evidence was filed by the applicants by October 2, 2013. On October 16, 2013, IPOS wrote to the applicants that the application was deemed withdrawn. Five days after receipt of the aforementioned letter, the applicants wrote to IPOS, submitting the form for EOT and explaining that the deadline was missed on account of a docketing error which was compounded by the solicitor-in charge going for a mandatory military reservist camp. On October 28, 2013, the applicants submitted their statutory declaration for the restoration of the subject application and sought leave for an interlocutory hearing.
 
 
Applicant’s Submissions
 
The applicants submitted that, as confirmed by Asian Aisle Pte Ltd v Ricegrowers Co-operative Limited[2002]SGIPOS7, Rule 83 of the Trademark Rules (Rules) enables the Registrar to allow a request for an EOT if such extension is in the best interest of the parties. Further, the applicants set out the principles expounded by the Court of Appeal in The Tokai Maru [1998]2SLR(R)646, which the Registrar ought to adopt while exercising his powers under Rule 83:
 
1. The “litigant should not be deprived of his opportunity to…have determination of the issues on merits as a punishment for a breach of these Rules” unless the other party is prejudiced and cannot be compensated in costs;
 
2. It is “rarely appropriate” to deny a party an EOT “where the denial would have the effect of depriving him of his defence because of a procedural default” and lead to prejudice that cannot be compensated in costs.
 
The applicant further submitted that there exists a “good explanation for the oversight” and no prejudice was caused to the respondents. They argued that in the interest of justice, procedural defaults should not be allowed to prevail over substantive justice, and blind adherence to procedural requirements would be “unnecessarily draconian” in the present matter.
 
 
Respondent’s Submissions
 
The respondents argued that Rule 83 mandates a balancing exercise between “public interest that rules relating to procedure are followed” for certainty and finality, on one hand, and “the need to ensure the determination of the issues on merits in the interest of justice” on the other hand. Thus, unless exceptional and extenuating circumstances exist, the public interest to promote certainty, finality and expeditious disposal of cases requires that IPOS ensure strict compliance with procedural time limits.
 
They further submitted that bona fide oversight or omission by the solicitor owing to incorrect docketing cannot be considered compelling enough in the present circumstances. The legitimate expectation on the part of the respondents that the opposition should be dealt with in due compliance of the Rules, together with the public interest associated with maintaining the procedural sanctity of the opposition proceedings, far outweigh the applicant’s delayed actions in defending their trademark application.
 
 
Decision
 
The Registrar refused the restoration of the subject trademark application and noted that there is no “general discretion” granted to the Registrar to extend prescribed time limits. These time limits are to be construed strictly unless exceptional circumstances dictate otherwise. The Registrar recognized the balancing prowess associated with the use of discretion and opined that the applicants had been unable to show the existence of compelling circumstances which made it pertinent for the Registrar to allow the extension of time superseding the public interest associated with deadlines and the legitimate expectation of the respondents that the sanctity of the opposition will be maintained.
 
This decision underscores the fact that while the Registrar has discretionary powers, it neither implies nor justifies the use of these powers without proper reason. Although there is no rule of law to define what error can be pardoned, it is important for party litigants to note that procedural defaults and bona fide errors and delays will not be condoned unless the applicant can establish an overall picture which is able to warrant the compassion of the Registry.

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